Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 14/01/2020

Lin Lin Zheng

Finsbury House, 23 Finsbury Circus, London EC2M 7EA

REINO UNIDO

Application No:	017880309
Your reference:
Trade mark:	Forexchat
Mark type:	Word mark
Applicant:	Hunan Bailun Network Technology Co., LTD A1247, HQ of Zhongdian Ruanjianyuan Co.,ltd, No.39 Jianshan Rd., Hitech Development Zone Changsha, Hu'nan 410205 REPÚBLICA POPULAR DE CHINA

1. Summary of the facts

The Office raised an objection on 09/07/2019 pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR because it found that the trade mark applied for is descriptive and devoid of any distinctive character, for the reasons set out in the attached letter.

2. The applicant’s observations

The applicant submitted its observations on 18/07/2019, which may be summarised as follows.

No exclusive right is claimed to the word ‘chat’ which forms part of the mark for which registration is sought. Due to the disclaimer all the goods and services in Classes 9, 38, 42 and 45 covered by the application can be retained.

The services in Class 36 are withdrawn.

3. Decision

Pursuant to Article 94 EUTMR, it is up to the Office to take a decision based on reasons or evidence on which the applicant has had an opportunity to present its comments.

After giving due consideration to the applicant’s arguments and despite the restriction of the list of goods and services, the Office has decided to maintain the objection.

Article 7 EUTMR, bearing the title ‘absolute grounds for refusal’, provides that registration cannot take place for, inter alia, trade marks that are devoid of any distinctive character, and trade marks that consist exclusively of signs or indications that may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service. This applies notwithstanding that the grounds of non-registrability obtain in only part of the European Union.

The marks referred to in Article 7(1)(b) EUTMR are, in particular, those that do not enable the relevant public ‘to repeat the experience of a purchase, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition of the goods or services concerned (27/02/2002, T-79/00, Lite, EU:T:2002:42, § 26).

By prohibiting the registration as European Union trade marks of the signs and indications to which it refers, Article 7(1)(c) EUTMR pursues an aim which is in the public interest, namely that descriptive signs or indications relating to the characteristics of goods or services in respect of which registration is sought may be freely used by all. That provision accordingly prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks. A word mark that has a clear descriptive meaning, is also devoid of any distinctive character.

According to settled case-law, the descriptiveness and distinctiveness of a trade mark must be appraised by looking at the mark as a whole and by having regard to the way that it is likely to be perceived by potential consumers of the goods or services at issue (27/02/2002, T‑79/00, Lite, EU:T:2002:42, § 27). However, that does not preclude prior examination of each of the trade mark’s individual features (09/07/2003, T‑234/01, Orange und Grau, EU:T:2003:202, § 32).

For a sign to fall under the prohibition set out in Article 7(1)(c) EUTMR, there must be a sufficiently direct and specific link between the sign and those goods or services to enable the public concerned to perceive immediately, without further thought, a description of the goods and services in question or one of their characteristics (03/12/2003, T‑16/02, TDI, EU:T:2003:327, § 29). As regards the requirement for a ‘sufficiently direct and specific link between the sign and the goods or services in question’, the Court has emphasised that in order to be descriptive, it is not necessary for the sign to directly describe the goods or services in question; a close link between the sign and the goods or services may be sufficient (25/09/2015, T‑591/14, PerfectRoast, EU:T:2015:700, § 25-26).

The applicant is willing to disclaim the exclusive right to the word ‘chat’. However, pursuant to Regulation No 2015/2424 amending Regulation No 207/2009 on the Community trade mark, it is no longer possible – since 23/03/2016 - to file a disclaimer to indicate that protection is not requested for a specific element of a mark.

On the other hand, even if it was still possible to file a disclaimer, the Office considers that disclaiming the word ‘chat’ would not overcome the absolute grounds objection raised in the present case. The relevant consumers would nevertheless perceive the word mark ‘Forexchat’ taken as a whole, as providing information that the goods and services covered in Classes 9, 38, 42 and 45 are concerned with the provision of technology and networking services that enable one or more simultaneous users of a computer network to exchange messages in real time concerning or relating to foreign exchange market. Therefore, the sign taken as a whole, despite the disclaimer, would still describe the intended purpose of the goods and services concerned, or other characteristics such as the subject matter of the goods and services in question.

Consequently, the Office maintains that from the point of view of the relevant professional public, there is a sufficiently direct and specific link between the mark ‘Forexchat’ and the goods and services for which protection is sought to enable the relevant public to perceive the mark immediately as a description of the goods and services or one of their characteristics. Therefore, in the absence of prior knowledge, the relevant public would not assume that the sign is an indicator of trade origin.

It is clear from the case-law of the General Court and the Court of Justice, that a word mark that is descriptive of characteristics of goods or services for the purposes of Article 7(1)(c) EUTMR is, on that account, necessarily devoid of any distinctive character with regard to the same goods or services for the purposes of Article 7(1)(b) EUTMR (12/02/2004, C-363/99, Postkantoor, EU:C:2004:86, § 86). Given that the mark applied for, ‘Forexchat’, has a clear descriptive meaning for the goods and services for which protection is sought, the impact of the mark on the relevant public will be primarily descriptive in nature. Therefore, the mark is also devoid of any distinctive character with regard to the same goods and services within the meaning of Article 7(1)(b) EUTMR.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR, the application for European Union trade mark No 17 880 309 is hereby rejected for the following goods and services:

Class 9 Computer peripheral devices; Computer software, recorded; Computers; Electronic publications, downloadable; Computer programs [downloadable software]; Computer software applications, downloadable; Downloadable image files; Computer memory devices; Computer operating programs, recorded.

Class 38 Video-on-demand transmission; Message sending; Information about telecommunication; Communications by cellular phones; Communications by computer terminals; Computer aided transmission of messages and images; Teleconferencing services; Providing internet chatrooms; Transmission of digital files; Providing online forums.

Class 42 Computer software design; Computer programming; Updating of computer software; Maintenance of computer software; Information technology [IT] consultancy; Cloud computing; Conversion of computer programs and data, other than physical conversion; Providing search engines for the internet; Creating and designing website-based indexes of information for others [information technology services]; Computer software consultancy.

Class 45 On-line social networking services; Leasing of internet domain names; Legal research; Licensing of computer software [legal services]; Registration of domain names [legal services].

The application may proceed for the remaining goods and services, namely:

Class 9: Animated cartoons.

Class 45 Monitoring of burglar and security alarms; Chaperoning; Clothing rental; Dating services; Funerary undertaking.

According to Article 67 EUTMR, you have a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid

Tuula RAJALA

ATTACHMENT Notice of grounds for refusal of application for a European Union trade mark (Article 7 and Article 42(2) EUTMR), 09/07/2019, 8 pages